Ashley Furniture Industries, Inc. v. Domain
Claim Number: FA1204001439400
Complainant is Ashley Furniture Industries, Inc. (“Complainant”), represented by Terrence J. Madden of Kostner, Koslo & Brovold LLC, Wisconsin, USA. Respondent is Domain (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ashleyhomestorenorcal.com>, registered with Go Canada Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 16, 2012.
On April 13, 2012, Go Canada Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <ashleyhomestorenorcal.com> domain name is registered with Go Canada Domains, LLC and that Respondent is the current registrant of the names. Go Canada Domains, LLC has verified that Respondent is bound by the Go Canada Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ashleyhomestorenorcal.com. Also on April 16, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant registered its ASHLEY HOMESTORES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,231,864 registered March 16, 1999) as well as other related trademarks.
Complainant uses the ASHLEY HOMESTORES mark in connection with retail store services in the field of furniture.
Respondent registered the disputed domain name on October 6, 2011.
Respondent is no longer making an active use of the disputed domain name and formerly used the disputed domain name to host a website with links to Complainant’s direct competitors.
Respondent’s domain name is confusingly similar to Complainant’s ASHLEY® trademark and the dominant portions of its trademarks ASHLEY HOMESTORES®, ASHLEY FURNITURE HOMESTORE®, and ASHLEY FURNITURE HOMESTORE & Design®, with the only substantive difference being the addition of the geographic location of “norcal” for Northern California.
Respondent does not use the disputed domain name for a bona fide offering of goods or services and does not make a legitimate noncommercial or fair use of the disputed domain name.
Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in its ASHELEY HOMESTORES® mark at all times relevant to this proceeding. Respondent’s <ashleyhomestorenorcal.com> domain name is confusingly similar to Complainant’s trademark.
Respondent registered the at-issue <ashleyhomestorenorcal.com> domain name on October 6, 2011.
Respondent knew of Complainant’s ASHELEY HOMESTORES trademark at the time it registered the at-issue domain name.
Respondent had, and has, no authority to use Complainant’s trademarks in any manner whatsoever.
While currently indicating it is “under construction,” the website located at the <ashleyhomestorenorcal.com> domain name formerly was used as a "parked" website containing links to other websites, including websites offering products from the Complainant's competitors, such as J.C. Penney.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
As evidenced by Complainant’s certificate of registration for ASHLEY HOMESTORES, Complainant has established it has rights in ASHLEY HOMESTORES under Policy ¶ 4(a)(i) by registering the mark as a trademark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). This rational holds even though the mark is not registered in the country where Respondent is located. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s at-issue domain name is confusingly similar to Complainant’s ASHLEY HOMESTORES® mark. The disputed domain name includes Complainant’s entire trademark less the last “s”, while adding the geographical descriptor “norcal” and the generic top-level domain name (“gTLD”) “.com.” These collective modifications to Complainant’s trademark are insufficient to distinguish the at-issue domain name from the trademark. Therefore, pursuant to Policy ¶ 4(a)(i) Respondent’s domain name is confusingly similar to Complainant’s ASHLEY HOMESTORES mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent lacks rights and legitimate interests in respect of the <ashleyhomestorenorcal.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence supporting that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since there was no response to the Complaint, Complainant’s prima facie case will be conclusive.
Although Complainant makes no specific allegations concerning Policy ¶ 4(c)(ii), Complainant nevertheless asserts that Respondent is not a customer of Complainant and that Complainant has not licensed or otherwise authorized Respondent to use its registered trademarks. Furthermore, the WHOIS record for the disputed domain name identifies the registrant as “Domain.” “Domain” does not nominally relate to, or otherwise identify, the at-issue domain name. Respondent is therefore not commonly known by the disputed domain name based on the WHOIS information and the other evidence of record. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is also not using the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name since the at-issue domain name formerly resolved to a website hosting pay-per-click links to unrelated sites and to Complainant’s direct competitors. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Further support for the proposition that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use is given by the evidence of record showing that Respondent’s domain name currently resolves to an inactive website. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel concludes that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Given Complainant’s uncontroverted evidence, Complainant well satisfies its initial burden and thereby conclusively demonstrates that Respondent lacks rights and interests in the <ashleyhomestorenorcal.com> domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent was using the disputed domain name to attract Internet users for commercial gain. The at-issue domain name previously resolved to a website containing hyperlinks to Complainant’s competitors. There is also an unrebutted presumption that Respondent received compensation for allowing the <ashleyhomestorenorcal.com> domain name to be used in such a manner. Using a disputed domain name to host competing hyperlinks is evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, Complainant’s trademark registration for the ASHLEY HOMESTORES mark existed well before the registration of the at-issue domain name. Given the nature and notoriety of Complainant’s mark, it is inconceivable to conclude that Respondent lacked actual knowledge of Complainant's rights in ASHLEY HOMESTORES prior to registering <ashleyhomestorenorcal.com> as a domain name. Indeed, it is clear that Complainant’s mark motivated the domain name’s registration. Under the circumstances Respondent’s prior knowledge of Complainant’s trademark further evidences Respondent’s bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleyhomestorenorcal.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 13, 2012
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